Watching Updates

TM TKO has made several improvements that should make reviewing watches far quicker and more efficient.

Flagging priority items. The watch overview page and individual watch reports now flag higher-priority items to call them to your attention, as in the watch overview page example for SOUL KEEPER for restaurant services that is shown below.

soul_keeper

More aggressive screening of lower-quality results. We are removing more lower-quality results from your result sets, providing fewer total results without compromising reporting of potentially concerning applications.

Daily digest emails. Email reports are now provided in a convenient daily digest rather than individual emails. These digest emails highlight potentially concerning results.

From this “digest” email, you can either click “View all watch activity” to go to your main watch overview page, or click into specific reports.

digest_email

We hope you enjoy the changes! If you have any comments or suggestions, we’d love to hear from you – please email us at support@tmtko.com.

Two New ThorCheck Tools from TM TKO

TM TKO is excited to announce two powerful additions to its core ThorCheck™ trademark research tool. The two central factors of the likelihood of confusion analysis are the similarity of the marks and the relationship between the goods and services. ThorCheck “classic” generates registry-based evidence for the goods and services relationship.

The two new additions to ThorCheck bring its powerful comparison engine to bear on questions of mark similarity.  If you represent a junior party, you can use these tools to identify evidence of mark co-existence that can help convince Examiners, counter-parties, or a court that your client’s mark should be able to co-exist with a prior mark. If you represent a senior party, you can find evidence over overlap – that the same company owns multiple marks that contain a single term (Term Coexistence) or that the same company owns marks that differ only (or mainly) by the term you search for (Term Difference). This powerful evidence takes hours to track down manually, but ThorCheck makes the research instantaneous – you can do your best work, and work much more efficiently.

Term Coexistence

Use this tool to find examples of co-existing registrations in the same class that contain both of the relevant terms. For example, if your client’s mark was NIGHT HAWK and the other party’s mark was BRIGHT BIRD, the following search identifies instances where active, use-based registrations containing HAWK coexist on the registry with registrations containing BIRD in the same class.

thor_term_coexist

Results pairs are organized by class. Within a class, these with marks that share another common term prioritized, like the BLACKHAWK vs BLACKBIRD registrations shown below. This search identifies dozens of high-quality matches similar to BLACKHAWK vs BLACKBIRD, plus many, many more “looser” matches.

thor_term_coexist_result

As with all ThorCheck reports, you can export tagged records via Word to incorporate the summary chart into a draft Office Action Response or other document, or export TSDR status and title copies to make this quality evidence official “of record” in your prosecution history file or TTAB proceeding.

Term Difference

Use the “Term Difference” tool to identify instances where two owners have marks in a single class that differ by a term. The second new tool requires only one input: the term by which they differ. So, if your mark differs from a prior mark largely due to the term PURPLE, you can enter that term and find other instances of co-existing registrations that differ only by this term. Since this tool is prioritizing results that share a common term (whatever that term is), it’s almost impossible to duplicate manually without hours and hours of effort.

The excerpt below shows sample results for the PURPLE search. Results that differ ONLY by the word “purple,” like PURPLE HEAT vs HEAT and PURPLESTAR vs STAR & Design in the example below, are prioritized. The full report identifes dozens of matches.

thor_difference_result

We can’t wait to see how you use these new ThorCheck options!

 

Using Office Action Search for TTAB-Related Research

With TM TKO’s Office Action research tools, you can easily see how the Examining corps and applicant-side trademark attorneys are using Trademark Trial and Appeal Board decisions.

We will look at a selection of recent precedential decisions from the TTAB and outcomes where Examiners or applicants citing to these decisions. I focused on USPQ citations, which may under-count the decisions slightly, and may miss citations issued right after the cases came out and before a USPQ number is assigned, but it suffices for a quick read of relative citation frequency.

Case Decision First Citation Pub. Rate
In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) Allowed screenshots of software login & search screens as specimens – 1 cite by USPTO
– 4/1/2018 second Office Action

– 13 cites from applicants
– first cite: 2/28/2018 Office Action Response

Pub: 3
Reg: 8
Pending pre-pub: 2
Abandoned: 0

Specimen issues are common but are frequently resolved in prosecution. Even by those standards, applicants citing Minerva have been quite successful.

Specimen issues are common but are frequently resolved in prosecution. Even by those standards, applicants citing Minerva have been quite successful.

Case Decision First Citation Pub. Rate
Grote Industries v. Truck-Lite Co., LLC f/k/a/ Truck-Lite Co., Inc., 126 USPQ2d 1197 (TTAB 2018) Truck light design not functional under 2(e)(5) but had not acquired distinctiveness under 2(f) – 1 cite by USPTO
– 6/14/2018 Office Action, replacing an earlier final Office Action from December with a non-final Office Action account for the Grote decision

– not cited by any applicants yet

Pub: 0
Reg: 0
Pending pre-pub: 1
Abandoned: 0

Functionality refusals are quite rare – a couple of hundred Office Actions in 2018 to date. It’s little surprise that this March 2018 decision has gotten little traction from either the USPTO’s examining corps or applicants’ counsel so far.

Case Decision First Citation Pub. Rate
In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017) Design was a “simulation” of Prince of Wales’ official insignia under 2(a) – 3 cites by USPTO
– 4/12/2018 first Office Action for this principle of law (the same application on remand)

 

– 3 cites by applicants
– 12/22/2017 first Office Action Response

Pub: 2
Reg: 0
Pending pre-pub: 3
Abandoned: 1

Insignia refusals under Section 2(b) of the Lanham Act are one of the very least common types of refusals, with under 120 in 2018. Most of these relate to US or Swiss flags, so the Welsh insignia here is especially uncommon. An uncommon fact pattern in an overall uncommon refusal has generated only a handful of citations to the case, although respondents referencing it have been relatively successful.

Case Decision First Citation Pub. Rate
Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) On evidence that registered PRIMROSE co-existed with multiple direct competitors using the same mark, overturns 2(d) citation for ROSE SENIOR LIVING – 2,261 cites from USPTO
– 199 cites by applicants
– 4/26/2017 first Office Action Response
Pub: 241
Reg: 93
Pending pre-pub: 1689
Abandoned: 571

What on earth is going on with the Primrose case, which was first cited almost four months after its issuance and hardly cited to at all for almost a year and a half, and, more recently, is cited constantly? In an October 2017 update, the Trademark Manual of Examination Procedure added references to Primrose to its sections about sophisticated purchasers (1207.01(d)(vii)) and third-party registration and use evidence (1207.01(d)(iii)). The case is often used to support the sophisticated purchaser principal by Examining Attorneys, and applicants’ counsel are especially likely to cite to the latter principal about third-party evidence. The uptick in citations to Primrose occurred recently enough that most of the Office Actions and Responses referring to Primrose haven’t reached a final decision.

How Can You Do This Sort of Research?

If you want to see how other lawyers are effectively referencing key TTAB decisions that you want to use in your own writing, you can sign up for a thirty-day free trial of TM TKO. You’ll get unlimited use of our tools, too: instant, smart search, unlimited watch and 2(d) citation watching, ThorCheck, and other unique research tools.

Researching Surname Refusals

Today, we’ll take a look at “primarily merely a surname” refusals. Section 1052(e)(4) of the Lanham Act limits registration where the mark is “primarily merely a surname.” TMEP § 1211.01. To make a determination about whether consumers will perceive the mark as primarily merely a surname, the Office will consider:

  • (1) whether the surname is rare;
  • (2) whether the term is the surname of anyone connected with the applicant;
  • (3) whether the term has any recognized meaning other than as a surname;
  • (4) whether it has the “structure and pronunciation” of a surname; and
  • (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.

In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). The first and third tend to be the most frequent points of dispute.

Since 2010, the Office has preliminarily refused over 53,000 marks on 2(e)(4) grounds. Just shy of 40% of applications that received this refusal were abandoned prior to publication. The rest resolved the issue in one way or another, resulting in either registrations the Principal Register (~23%), registrations with a 2(f) claim in whole or in part (~15%), registrations on the Supplemental Register (~12% each), or applications that were abandoned after publication (~10%). In all, that’s about half of applications where the mark was accepted as inherently or practically distinctive, and half where the refusal held up.

surname_outcomes

1. Whether a Term is Rare

Whether a term is “extremely rare” depends on the facts. TMEP 1211.02(b)(i). The Trademark Trial and Appeal Board has found that 456 instances of a surname in the United States were “extremely rare” and unlikely to be perceived as a surname by customers. In re Joint-Stock Company “Baik”, 84 USPQ 2d 1921, 1923 (TTAB 2007). Using TM TKO’s Office Action research tools, it’s quick to find other examples of refusals based on low numbers being overcome, such as HOSS (100 times), AQUARO (a bit more than 100 times), FAUCHER (40 times), and more. Some of these refusals are frankly pretty bad – HOSS, in particular, has an obvious “recognized meaning other than as a surname” and should never have generated a 2(e)(4) refusal.

Strange surname refusals are surprisingly common. ZENGAGE, LONGFRI, MAGOS, VIVINO, JARDINE, and even ADEPTUS generated a surname inquiry (if not outright refusal). The consistency of the surname refusal examination appears to leave something to be desired, especially as applied to foreign terms that are primarily understood as normal words rather than surnames.

2. Whether a Term has a Recognized Meaning other than a Surname

By using TM TKO’s free-text Office Action Response search and TTAB case research, we can identify a few interesting types of “recognized meanings” that the Examining corps has accepted.

– It is a surname, but one that primarily has historical import. See, e.g., a successful Office Action Response for MEDICI, Ser. No. 86724819, a successful Office Action Response arguing that CASSINI suggests the scientist behind a mapping system and not a likely surname of the provider, Ser. No. 85523416, and a successful TTAB appeal for ROMANOV, In re The Hyman Companies Inc., Ser. No. 85483695 (TTAB June 4, 2015) (not precedential). The applicant for VICKERS for gin even successfully argued that a name based on two early 19th century distillers of the same name was sufficiently historical, Ser. No. 86365318.

– The term is also used as the identifier for a city or geographic region. See, e.g., a successful Office Action Response for STRATTON, Ser. No. 85299672. These arguments are always somewhat funny to me for two reasons. First, they point to potentially different grounds for a 2(e) refusal. Second, the cities or counties (or business names) that applicants are using as evidence tend themselves to be based on or derived from surnames. However, these types of arguments are frequently successful.

– Pointing out that a term is both a surname and a given name is frequently successful, e.g. in responses for HAYDEN’S BAR AND GRILL, Ser. No. 77818198, and a successful response for CONNELLY, Ser. No. 85583934.

Need to do More Research?

If you need more specialized research to overcome a surname refusal, please log in and start searching if you are already a client or sign up for a free trial if not. Either way, please don’t hesitate to reach out to us for any questions or research help.

Trademark Protections for Podcasts

Inspired by last week’s blog about clearance searches, which used the podcast “Cocaine and Rhinestones” as an example, I was curious about how frequently major podcasts were seeking protection for their names. To do so, I reviewed the top 100 podcasts on iTunes as of today. That won’t identify the 100 most enduringly popular podcasts, but it’s fine as a snapshot of a large group of successful podcasts.

Pod_by_app

Under half of this select group – 43% – have active pending trademark applications or trademark registrations with the USPTO. The most active filers are larger media organizations or those longstanding radio shows like NPR, TED, or the Dave Ramsey Show. More independent podcasts were considerably less likely to have filed.

Apple’s categorizations are a bit more rigorous than randomly assigned numbers, but not much, so the “Subject” category is all over the map. True crime podcasts seem to fall into one of about six categories, and many others are almost as arbitrary. For a representative example, TED Talks Daily is in Education, and TED Radio Hour in Technology.

Pod_by_topic

Full data is included below. This is just a snapshot of the current iTunes top 100, which is almost certainly not representative of podcasts across the board. These are likely to be larger and more successful, and thus more likely than average to be the subject of trademark filings. Some of these with earlier registration dates are registered for radio services or something very closely related; they’re still included below. Interestingly, a few newer independent podcasts filed applications that included a bunch of merchandising goods but not the podcast proper. It’s possible that that lines up more directly with the podcaster’s revenue, but, at least as of 2015, advertisers paid a premium for podcast listeners over traditional radio listeners, and the total podcast advertising market has only grown since then.

Rank Podcast Subject Filed Counsel
1 Oprah’s Master Class: The Podcast Society & Culture Abandoned

86535938

Filed 2015

Jessica Rothstein
2 Fatal Voyage: The Mysterious Death of Natalie Wood TV & Film No  
3 The Wilderness News & Politics Abandoned

86720837

 
4 Dan Carlin’s Hardcore History History 5334719

Filed 2017

Frank Curci
5 The Joe Rogan Experience Comedy No  
6 The Daily News & Politics 87791592 Jordan LaVine
7 Armchair Expert with Dax Shepard Comedy No  
8 Getting Curious with Jonathan Van Ness Society & Culture No  
9 Stuff You Should Know Society & Culture 3983155

Filed 2011

Jim Vana
10 Hidden Brain Science & Medicine 4042777

Filed 2010

 
11 VIEWS with David Dobrik and Jason Nash Comedy No  
12 Serial News & Politics 86454424

86464485

86454420

Filed 2014

Sean Fifield
13 Revisionist History Society & Culture 5259072

Filed 2016

 
14 My Favorite Murder with Karen Kilgariff and Georgia Hardstark Comedy 5519542

Filed 2017

Merchandise

Justin Sobodash
15 Pull Up with CJ McCollum Professional No  
16 Kickass News News & Politics No  
17 This American Life Personal Journals 2266765 and more

Filed 1998

Sean Fifeld
18 TED Talks Daily Education 3766908

and more

Filed 2009

Alan Taboada
19 Minutes to Freedom: A Warrior’s Daily Focus on Journals and Meditations Personal Journals No  
20 Duolingo Spanish Podcast Language Courses 4588574

Filed 2014

Perry Viscounty
21 Blinking Red – The Dan Rather Podcast News & Politics No  
22 Up and Vanished News & Politics No  
23 Oprah’s SuperSoul Conversations Society & Culture 87907738

Filed 2017

Tamara Carmichael
24 S-Town Personal Journals 5323056

5323149

Filed 2017

Sean Fifeld
25 How I Built This with Guy Raz Business 5306698

Filed 2017

Janet Cullum
26 Freakonomics Radio Society & Culture 3954795

Filed 2010

Peter Fields
27 TED Radio Hour Technology 3766908

and more

Filed 2009

Alan Taboada
28 Pod Save America News & Politics 5402998

Filed 2017

Monica Richman
29 The Ben Shapiro Show News & Politics 87743876

Filed 2018

 
30 Up First News & Politics 87377209

Filed 2017

Janet Cullum
31 RISE podcast Business No  
32 Aaron Mahnke’s Cabinet of Curiosities History No  
33 In the Dark News & Politics No  
34 Fresh Air Arts 1683293

Filed 1992

Malcolm Stevenson
35 Something You Should Know Society & Culture No  
36 The Dave Ramsey Show Investing 3145275

3233048

Filed 2005/6

Matt Blackburn
37 Everything is Alive Society & Culture No  
38 Lore History No  
39 Business & Biceps Management & Marketing No  
40 Sword and Scale Social Sciences 5216335

Filed 2016

Heather Sapp
41 Planet Money Business 3734960

Filed 2008

Janet Cullum
42 Nobody Told Me! Self-Help No  
43 Chicks in the Office Society & Culture 87663301

Filed 2017

Elizabeth Sbardellati
44 RISE Together Self-Help 87958397

Filed 2018

Pattie Christensen
45 Radiolab Natural Sciences 3943633

Filed 2010

 
46 Wait Wait…Don’t Tell Me! Comedy 2248094

Filed 1997

Janet Cullum
47 Broken Record Music 88049023

88049021

Filed 2018

Dan Zupnick
48 Shane And Friends Comedy No  
49 Dirty John Personal Journals No  
50 The Good Life with Stevie & Sazan Society & Culture No  
51 Last Podcast On The Left Comedy No  
52 Household Name Business No  
53 Criminal Personal Journals No  
54 Where Should We Begin? with Esther Perel Society & Culture No  
55 Stuff You Missed in History Class History No  
56 The Jordan B. Peterson Podcast Higher Education No  
57 Pardon My Take Sports & Recreation 5269331

5156241

Filed 2016

Jesse Saivar
58 Small Doses with Amanda Seales Comedy No  
59 Cover-Up History No  
60 House of Kim with Kim Zolciak TV & Film Ni  
61 Clear+Vivid with Alan Alda Society & Culture 87639462

87199505

87507635

Filed 2017

Patrice Jean
62 Entrepreneur Stories   Inspiration: Millionaire Interviews Higher Education No  
63 The Gary Vee Audio Experience Management & Marketing 5422311

Filed 2017

Merchandise

David Gold
64 The Tony Robbins Podcast Education 4154395

Filed 2009

John Alspaugh
65 The RFK Tapes History No  
66 The Moth Performing Arts 2674258

Filed 1997

n/a
67 Someone Knows Something News & Politics No  
68 The News & Why It Matters News & Politics No  
69 The Peter Schiff Show Podcast Investing No  
70 NPR Politics Podcast News & Politics 1053082 etc

Filed 1975

Janet Cullum
71 Passive Real Estate Investing Investing No  
72 Slow Burn History No  
73 Invisibilia Science & Medicine 4847419

Filed 2014

Janet Cullum
74 Whine Down with Jana Kramer TV & Film No  
75 Monday Morning Podcast Comedy No  
76 WTF with Marc Maron Podcast Comedy No  
77 Your Art Sucks Arts No  
78 The Tim Ferriss Show Investing No  
79 Fantasy Focus Football Professional No  
80 Freedom Empowered Society & Culture No  
81 Inappropriate Earl Comedy No  
82 Fantasy Footballers – Fantasy Football Podcast Professional 4943334

Filed 2015

 
83 Brown Chicken Brown Cow Podcast Sexuality No  
84 Sleep With Me | The Podcast That Puts You To Sleep Alternative Health 5373936

Filed 2017

Quinn Heraty
85 The Rachel Maddow Show News & Politics No  
86 Guys We F****d Comedy No  
87 The Breakfast Club Comedy 2137981 etc

Filed 1996

Lesia Skrypoczka
88 % Invisible Design No  
89 The Teacher’s Pet News & Politics No  
90 Happier with Gretchen Rubin Self-Help No  
91 Casefile True Crime History No  
92 Atlanta Monster Society & Culture No  
93 Jocko Podcast Management & Marketing 87895857

Filed 2018

Charles Halloran
94 Anna Faris Is Unqualified Comedy 87120326

Filed 2016

Merchandise

Kenneth Feinswog
95 Serial Killers Society & Culture No  
96 Curious with Josh Peck Comedy No  
97 Crimetown News & Politics 87977821

87228301

Filed 2016

Douglas Wolf
98 Why Is This Happening? with Chris Hayes News & Politics 87866775

Filed 2018

David Hazlehurst
99 The Goal Digger Podcast – Marketing, Social Media, Creative Entrepreneurship, Small Business Strategy and Branding Management & Marketing No  
100 The Science of Happiness Social Sciences No  

Clearance Example – COCAINE & RHINESTONES

It’s been a while since we’ve taken a look at a clearance search. I have been listening to the podcast COCAINE & RHINESTONES by Tyler Mahan Coe, so let’s take a look at that mark.

To do the search, we just enter the mark and several goods and services related to podcasting – downloadable podcasts in Class 9, podcasting services generally in Class 38, and music podcasts in Class 41.

cokestones

We can see at a glance that we have several marks that include varieties of RHINESTONE in relevant classes and for related services, plus a few (the slightly lower line) that include the slightly more common COCAINE, but nothing with both (those would be right at the top of the graph). Double-clicking on any result takes you down to full details, like the following. In the full table, you can tag results for easy export to Word, or export TSDR status and title copies if you’re doing a search to find evidence for use in prosecution.

cokestones_4

How about identifying common-law use? Unsurprisingly, both the result sets for the mark alone and the mark plus podcast-related services zoom in on the podcast immediately.

cokestones_2

cokestones_3

Just for fun, let’s say you were planning on filing an application and wanted to get some ideas on other services that might be related. Let’s use the “Related GS” tool under the “Tools” menu to look for other descriptions that frequently overlap in active, use-based registration that contain “entertainment services, namely, providing podcasts in the field of music” in Class 41. We see a wide range of results, from downloadable podcasts in Class 9 to live music in Class 41 to career information in the music field in Class 35 and music magazines in Class 16. All could certainly be viable expansion avenues for a successful podcast.

cokestones_5

Happy searching!

Updates to 2(d) Citation Office Action Research

TM TKO has updated our Office Action research tools! You can now separately search criteria for both the trademark application that got an Office Action and for the criteria of the application that was cited by the Office as a possible bar to registration. This permits even more simple, in-depth research for specific refusal fact patterns.

For a sample, the search below identifies the relatively small number of applications for beer that faced a 2(d) refusal but ultimately made it through to registration. This search focuses on incoming responses that successfully overcame the refusal. This is a longtime bugaboo for prosecution attorneys, who see less overlap in the marketplace than the USPTO precedent recognizes.

Cited_example

The search yields more than eighty examples of applicants who got these sort of 2(d) refusals and ultimately moved to registration, whether due to argument alone, consent agreements, or otherwise. You can then use these as resources to find useful arguments, use select outcomes as examples, and more.

2d Updates results

Happy searching!